Bovis Foods, LLC

Trademark Trial and Appeal Board

Nov 18, 2016

No. 86286415 (T.T.A.B. Nov. 18, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: November 18, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bovis Foods, LLC.
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Serial No. 86286415
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Erik M. Pelton of Erik M. Pelton & Associates PLLC,
for Bovis Foods, LLC.
Gina M. Fink, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Kuhlke, Taylor and Adlin,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Bovis Foods, LLC (“Applicant”) seeks registration on the Principal Register of the
mark LEFTY’S in standard characters for “restaurant and bar services,” in
International Class 43.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 86286415 was filed on May 20, 2014, under Section 1(a) of the
Trademark Act, based upon Applicant’s allegation of a first use and first use in commerce
date of 1958.
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Applicant’s mark, when used in connection with the identified services, so resembles
the mark LEFTY’S in standard characters registered on the Principal Register for
“Bar and restaurant services; [ Cafe and restaurant services; ] Cafeteria and
restaurant services; Carry-out restaurants; [ Fast food and non-stop restaurant
services; ] Restaurant; Restaurant and bar services; [ Restaurant and cafe services; ]
Restaurant and catering services; Restaurant services; Restaurant services featuring
sandwiches; Restaurant services, including sit-down service of food and take-out
restaurant services; Restaurant, bar and catering services; Restaurants; Restaurants
featuring home delivery; Self service restaurants; Take-out restaurant services;
Serving food and drinks; Serving of food and drink/beverages; Catering for the
provision of food and beverages; Catering of food and drinks; Fast-food restaurants;
Fast-food restaurants and snackbars; Food preparation services; [ Mobile cafe
services for providing food and drink; ] Preparation of food and beverages; Providing
of food and drink; Provision of food and drink in restaurants [ ; Rental of food service
equipment ]” in International Class 43,2 as to be likely to cause confusion, mistake or
deception.
When the refusal was made final, Applicant appealed and requested remand for
consideration of additional evidence. The Board granted the request and remanded
the application to the Examining Attorney for consideration of Applicant’s additional
evidence. Upon consideration of that evidence, the Examining Attorney maintained

2 Registration No. 3779930, issued on April 27, 2010. The services in brackets have been
deleted from the registration.
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the refusal, the Board resumed the appeal, and briefs were filed. We affirm the
refusal to register.
Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and others are discussed
below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944
(Fed. Cir. 2006) (even within the du Pont list, only factors that are “relevant and of
record” need be considered).
Similarity/Dissimilarity of the Marks
We compare marks “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du
Pont, 177 USPQ at 567).
Applicant’s and Registrant’s marks, LEFTY’S in standard characters, are
identical “in their entireties as to appearance, sound, connotation and commercial
impression.”
Similarity of the Services/Channels of Trade/Consumers
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With regard to the services, channels of trade and classes of consumers, we must
make our determinations under these factors based on the services as they are
identified in the application and registration. See In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002); and Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming
public may perceive [the respective goods and services of the parties] as related
enough to cause confusion about the source or origin of the goods and services.’” In re
St. Helena Hosp., 113 USPQ2d at 1086 (quoting Hewlett Packard, 62 USPQ2d at
1004).
Applicant’s “restaurant and bar services” are identical to Registrant’s “restaurant
and bar services.”
As to the channels of trade and classes of consumers, because the services are
identical we must presume that Applicant’s and Registrant’s services are offered
through the same channels of trade to the same classes of purchasers. Hewlett-
Packard Co. v. Packard Press, Inc., 62 USPQ2d at 1005 (“absent restrictions in the
application and registration, goods and services are presumed to travel in the same
channels of trade to the same class of purchasers.”) See also In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2014) (Board entitled to rely on this
legal presumption).
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At this point in the analysis we have identical marks, identical services and
identical channels of trade; this is clearly a strong case to find likelihood of confusion.
Other Factors
Applicant argues, however, that the refusal should be reversed because (1)
Applicant’s use of the mark predates Registrant’s use by more than 30 years, and (2)
the marks have co-existed with no confusion for more than 25 years. App. Br., 10
TTABVUE 5. More specifically, Applicant points to its use of the LEFTY’S mark for
restaurant and bar services for “nearly 60 years” and its registrations for LEFTY
O’DOUL’S for restaurant and bar services, hot dogs, and mustard; LEFTYS BLOODY
MARY MIX for non-alcoholic cocktail mix; and LEFTY’S for non-alcoholic cocktail
mixes, and energy drinks, and asserts that it “has continued to reinforce the source
identifying capacity and significance of the marks mark [sic] through exploitation of
the LEFTY’S and LEFTY O’DOUL’S marks for highly related services and has
created a mark with a strong commercial impression.” App. Br., 10 TTABVUE 9.
Applicant further argues that:
Applicant’s bar and restaurant has coexisted with the cited
bar and restaurant for more than twenty-five years
without incident in the marketplace. Despite Applicant’s
success at attracting customers from around the world and
sale of goods in multiple states, there has never been any
allegation of confusion made in the marketplace or by
either party. Multiple registrations of Applicant and
registrant featuring LEFTY’S have coexisted for more than
five years on the register without incident. Applicant has
registered the mark LEFTY’S for additional related goods
with no objection from registrant. There is no reason to
believe that registration of Applicant’s LEFTY’S mark here
will upheave the status quo. The field of bars and
restaurants is very crowded, and there are countless
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examples of bars and restaurants coexisting both in the
marketplace and on the register with shared terms and
similar constructions. There have even been other
LEFTY’S marks on the register for restaurant services and
food goods (now cancelled) during large portions of the
marks’ coexistence and there are other LEFTY’S
applications currently pending. The crowded nature of the
restaurant and bar field and the resulting coexistence of
similar marks affects the way marks in the field convey
consumer impressions, the relative strengths of the marks
as source identifiers, and conditions under which
consumers purchase the goods, the market interface
between the marks and goods, and the likelihood and
extent of consumer confusion as to source of these services.
Consumers are able to see beyond individual terms because
the market has conditioned them to do so.
App. Br., 10 TTABVUE 11.
Priority of use is not relevant in the context of an ex parte appeal. Priority is
relevant in the context of an inter partes proceeding. Applicant could have petitioned
to cancel the cited registration, issued on April 27, 2010, based on its priority after it
received the September 8, 2014 Office Action or the March 23, 2015 Final Office
Action but chose not do so. Alternatively, Applicant could have amended its
application to one for concurrent use.
Concurrent and overlapping use is relevant in the context of the du Pont factor
“the length of time during and conditions under which there has been concurrent use
without evidence of actual confusion.” Unlike the channels of trade factor which
presumes all possible, not just actual, channels of trade encompassed by the
application and registration, the actual channels of trade are relevant to an analysis
regarding actual confusion in order to determine if there have been meaningful
opportunities for confusion to occur. We cannot know to what extent Registrant’s
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customers, presumably in Maryland, have traveled to San Francisco and seen or
eaten at Applicant’s restaurant, and vice versa, therefore the record does not
conclusively establish meaningful opportunities for confusion. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000).
Even assuming Applicant’s restaurant is known to those who have not travelled
to San Francisco or eaten there due to its length of use for restaurant services and
certain goods, and its connection with the baseball player Lefty O’Doul, the fact that
Applicant is not aware of actual confusion does not mean there has not been nor does
it foreclose the likelihood of confusion. A showing of actual confusion would of course
be highly probative, if not conclusive, of a likelihood of confusion. The opposite is not
true, however. The lack of evidence of actual confusion carries little weight. J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
The uncorroborated statement that there are no known instances of actual
confusion based on the coexistence of Applicant’s and Registrant’s marks is of little
or no evidentiary value in this ex parte proceeding. In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). Moreover, in the context of an ex
parte proceeding a registrant “has no chance to be heard from (at least in the absence
of a consent agreement, which applicant has not submitted in this case).” In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). The issue before us is
likelihood of confusion, not actual confusion. Herbko Int’l Inc. v. Kappa Books Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual confusion not
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required). In short, the coexistence of these identical marks on separate coasts for the
identical services does not support nationwide registration and protection for both.
Regarding the argument that the restaurant field is crowded with LEFTY marks,
the record shows Applicant and Registrant using and registering marks with the
common term LEFTY’S, but Applicant’s registered mark for restaurant services
(along with hot dogs and mustard) has distinguishing features, namely, the
additional surname O’DOULS. Applicant’s LEFTY’S registrations for non-alcoholic
cocktail mixes and energy drinks, even if considered related to restaurants, do not
remove likelihood of confusion between identical marks for identical services which
is this case. Even if there were sufficient evidence to find the field of restaurants that
incorporate the term LEFTY’S in their marks crowded, and that the use and
registration of LEFTY’S for goods adds to the crowded field, there must be some
distinguishing element in the applied-for and registered marks or the goods and
services by which consumers may distinguish them. Here, everything is identical.
Balancing of Factors
In conclusion, because the marks are identical, the services are identical, and the
channels of trade and consumers are presumed to overlap, we find that confusion is
likely between Applicant’s and Registrant’s LEFTY’S marks for “restaurant and bar
services.”
Decision: The refusal to register Applicant’s mark is affirmed.